You’ve picked he perfect name for your new pet food company: Cosmo’s Kitchen. You’ve even invented a cartoon character---an adorable white terrier named Cosmo---to symbolize your brand. Now you’re ready to take over the pet food world.
Not so fast. You need to make sure you can legally use and protect the name. You don’t want to invest money and time building “brand equity”---value associated with the name of your company---just to discover someone else already uses the name “Cosmo’s Kitchen.”
That’s where trademark laws come in. Trademarks protect the rights of owners of a company, keeping others from using their names on similar or competing products or services. Trademarks also protect consumers; by preventing other companies from using the names or marks of others, consumers can be confident of who they’re buying from.
A trademark protects your “intellectual” property---valuable company assets that are not tangible but are the result of brainwork and creativity. There are three main ways to protect intellectual property:
- Through trademarks for names, logos, and other identifiers of products or services. These are relatively easy and not too costly to obtain.
- Through copyrights for creative works, whether books, music, art or software. These are very easy and inexpensive to obtain.
- Through patents for inventions. These are difficult and expensive to obtain.
Trademarks are more important than ever, especially if you’re investing a lot of time and money in a brand name or intend to do business in more than one state. Before the invention of Internet, you may have happily and legally done business in your community without being confused with a business using the same name in another state. Now if one of you puts us a Web site, customers won’t know who’s who.
When you apply for a trademark, you indicate what category or categories of product or services you’re going to use it for. You only get protection for the type of use you indicate. For instance, if you’re using “Cosmo’s Kitchen” for pet food, someone else could get the rights to use the name for unrelated products or services, such as a restaurant.
There are limits to what you can trademark. A name has to be “distinctive” merely “descriptive.” For instance, you probably couldn’t trademark a name such as “Healthy Dog Food.”
In fact, if you’re inventing a whole new product category, you may need to come up with a generic way to describe it. I had a client who invented the first skateboard for downhill dirt slopes. He named it the MountainBoard ™. But he had to also come up with a descriptive term, “all terrain board,” to satisfy the trademark office.
Once you have a trademark, you have to protect it. If a company doesn’t protect their trademark, they can lose it.
Once, for instance, the word “zipper” was a trade name of the B.F. Goodrich company, but people used the term to describe all such fasteners, and the name lost any protected status. That’s why companies with products such as Kleenex (TM), Coke (TM) or Google (TM) send “cease-and-desist” letters to companies who use their names to refer to similar generic products or services.
You can start to acquire rights in a name without registering with the U.S. Patent and Trademark Office, just by putting the symbols “TM” (for products) or “SM” ( for services). But registering the mark gives you more protection. Once you’ve registered with the USPTO, you can use the symbol “R” in a circle.
To get started on your trademark search, begin at the U.S. Patent and Trademark Office’s website (www.uspto.gov, under “Trademarks”). That helps you eliminate a number of names right from the start. But since companies can acquire rights without registering---if you’re investing a lot of money in the name---you may want to hire a trademark attorney or search firm to do a complete search for you.
Reality check: Avoid any name close to or potentially confused with a big company’s trademark. Even if you’re legally in the clear, in trademark issues, the side with the greatest ability and willingness to spend money on lawyers gets their way.